WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Merck Sharp & Dohme Corp. v. Mark Bostel, Bostel LLC

Case No. D2015-1703

1. The Parties

Complainant is Merck Sharp & Dohme Corp. of Whitehouse Station, New Jersey, United States of America (“United States”), represented by Reed Smith LLP, United States.

Respondent is Mark Bostel, Bostel LLC of Cranford, New Jersey, United States.

2. The Domain Name and Registrar

The disputed domain name <merckrecall.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2015.

The Center appointed Gary J. Nelson as the sole panelist in this matter on October 30, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of numerous United States Trademark Registrations that incorporate the MERCK trademark. Complainant is the owner of at least two United States Trademark Registrations for MERCK in connection with pharmaceutical products. Specifically, Complainant owns at least the following trademark registrations:

The disputed domain name <merckrecall.com> appears to have been registered on March 1, 2015. There is no active website associated with this disputed domain name.

5. Parties’ Contentions

A. Complainant

Complainant is the owner of the MERCK trademark as well as a family of marks incorporating its MERCK trademark in the United States.

Complainant’s has longstanding and extensive use of its MERCK trademark which can be traced back to at least as early as 1887.

Complainant is one of the world’s largest pharmaceutical companies, and is a global research-driven company that discovers, develops, manufactures, and markets a broad range of human pharmaceuticals and health care products throughout the world.

Complainant invests billions of dollars in the research and development of its broad portfolio of highly-innovative prescription drugs, focusing in the therapeutic area of cardiovascular, diabetes, obesity, bone, respiratory, immunology, dermatology, infectious disease, oncology, women’s health, neurosciences, ophthalmology, endocrinology, and animal health. In 2014 alone, Complainant had sales of over USD 42.2 million.

Complainant has been repeatedly acknowledged for its community and charitable support efforts, having been recognized for a broad range of activities, programs, and donative and outreach efforts.

The disputed domain name <merckrecall.com> is confusingly similar to Complainant’s MERCK trademark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns prior rights in the MERCK trademark and that the disputed domain name is confusingly similar to Complainant’s MERCK trademark.

Complainant owns numerous United States Trademark Registrations containing the MERCK trademark and owns at least two MERCK trademark registrations in the United States.

Accordingly, Complainant has established rights in its MERCK mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).

The disputed domain name, <merckrecall.com>, is confusingly similar to Complainant’s MERCK trademark because the disputed domain name incorporates the entirety of Complainant’s MERCK trademark and merely adds a dictionary term immediately following the MERCK trademark (i.e., “recall”), and the generic Top-Level Domain suffix “.com”.

Neither the addition of purely dictionary term to a well-known mark nor the addition of a generic Top-Level Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof / Unister GmbH, WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to Complainant’s MONTAGE trademark created a domain name <montage-beverly-hills.com> that was confusingly similar to complainant’s trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., “recall”) has taken on a specific meaning relevant to the Complainant’s trademark. A recall in the pharmaceutical industry is typically publicized by the Food and Drug Administration (“FDA”), a United States government authority, in order to inform citizens of potential product hazards in the interest of public safety. Accordingly, due to the widespread use of the term “recall” in the Pharmaceutical industry, the combination of the term “recall” with Complainant’s MERCK trademark increases the confusing similarity between the disputed domain name, <merckrecall.com>, and the MERCK trademark. See Johnson & Johnson and McNeil PPC Inc. v. Registrant [3165489]: Alex Do, WIPO Case No. D2010-1563 (finding the disputed domain name <mcneilproductsrecall.com> confusingly similar to complainant’s MCNEIL trademark, and finding that the mere addition of the generic terms “product” and “recall” increases the confusing similarity because these terms describe the activity of product recall and do nothing to distinguish the disputed domain name from the registered trademark); see also ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).

Accordingly, the addition of the term “recall” directly behind Complainant’s MERCK trademark is insufficient to avoid a finding of confusing similarity.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “merck”, “recall”, or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its MERCK trademark.

For the disputed domain name, Respondent is maintaining passive and undeveloped website. Respondent’s failure to develop active websites corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the MERCK trademark. Respondent’s awareness of the MERCK trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name and since the MERCK trademark is widely known. The relevant priority date for all of Complainant’s relevant trademark registrations precede the date upon which the disputed domain name was registered (i.e., March 1, 2015). See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

Respondent is maintaining a passive website associated with the disputed domain name. Under the circumstances of this case, the Panel finds this inactivity to be further evidence that the Respondent registered and is using the disputed domain name in bad faith. See Alitalia –Linee Aeree Italiane S.p.A. v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there were no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose) and also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <merckrecall.com> be transferred to Complainant.

Gary J. Nelson
Sole Panelist
Date: November 10, 2015